CHE Proximity Pty Ltd v CHEP Technology Pty Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by CHE Proximity Pty Ltd to registration of trade mark applications 2248746 (6, 9, 16, 20, 22, 35, 37, 39, 41, 42, 44, 45) – CHEP NETWORK and – 2249181 (6, 9, 16, 20, 22, 35, 37, 39, 41, 42, 44, 45) – CHEP – in the name of CHEP Technology Pty Limited

Delegate:

Louise Tuohy

Representation:

Opponent: Natalie Hickey of Counsel instructed by Holding Redlich

Applicant: Ben Gardiner of Kings Counsel instructed by Thompson Geer

Decision:

2024 ATMO 213

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 58, 60 and 62A pursued – none established – trade marks to proceed to registration

Background

This matter concerns an opposition by CHE Proximity Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark applications (‘Applications’) in the name of CHEP Technology Pty Limited (‘Applicant’):
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade mark number:  2248746
Trade mark:  CHEP NETWORK (‘746 Mark’)
Filing date:  11 February 2022
Specification[2]:  Class 35: …Collection of data; Collection of personnel information; Data collection (for others); Data analysis; Data handling; Data management; Data processing for businesses; Business consultancy in relation to operations and logistics; Business consulting services in relation to logistics; Logistics services (business management and organization of facilities and resources); Compilation of information into computer databases; Maintaining data in databases; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Updating data in databases; Business consultancy to firms; Business consultancy to individuals; Consultancy relating to business efficiency; Business networking services
[2] See Annexure A for complete specification. The specification above only provides information on the Applicant’s services identified and pursued by the Opponent in classes 35, 39 and 42.
Class 39: … Advisory services relating to the handling of goods; Advisory services relating to the packing of goods; Advisory services relating to the storage of goods; Advisory services relating to the transport industry; Advisory services relating to transport; Advisory services relating to transportation; … Computerised distribution advisory services relating to transport; Transportation logistics;…Consultancy services relating to transportation; Consultancy services relating to warehousing; Consultation services relating to the packaging of goods; Transport consultancy services
Class 42: …Hosting digital platforms for Logistics as a Service [Laas]; Hosting digital platforms for Mobility as a Service [Maas]; Hosting digital platforms for Transport as a Service [Taas]; Hosting computer sites [web site] for Mobility as a Service [Maas]; Hosting computer site [web site] for Transport as a Service [Taas]; Provision of online non-downloadable software (application service provider); Provision of online non-downloadable web-based software; Online provision of web-based applications (non-downloadable); Online provision of web-based software (non-downloadable); Computer programming services for data processing; Computerised data storage services; Data storage, other than physical storage; Design of computer databases; Development of systems for the processing of data; Development of systems for the storage of data; Electronic data storage; Technical data analysis services; Design of commercial products; …; Design of new products; Design of products; Product design; … Research and development of products; Research in the field of artificial intelligence technology; Research to develop new products; …Development of new products; Product development; … (‘746 Services’)

And

Trade mark number:  2249181
Trade mark:  CHEP (‘181 Mark’)
Filing date:  14 February 2022
Specification[3]:  Class 35: Collection of data; Collection of personnel information; Data collection (for others); Data analysis; Data handling; Data management; Data processing for businesses; Business consultancy in relation to operations and logistics; Business consulting services in relation to logistics; Logistics services (business management and organization of facilities and resources); Compilation of information into computer databases; Maintaining data in databases; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Updating data in databases; Business consultancy to firms; Business consultancy to individuals; Consultancy relating to business efficiency; Business networking services
Class 39: …Advisory services relating to the handling of goods; Advisory services relating to the packing of goods; Advisory services relating to the storage of goods; Advisory services relating to the transport industry; Advisory services relating to transport; Advisory services relating to transportation; … Computerised distribution advisory services relating to transport;… Consultancy services relating to transportation; Consultancy services relating to warehousing; Consultation services relating to the packaging of goods; Transport consultancy services
Class 42: Hosting digital platforms for Logistics as a Service [Laas]; Hosting digital platforms for Mobility as a Service [Maas]; Hosting digital platforms for Transport as a Service [Taas]; Hosting computer sites [web site] for Mobility as a Service [Maas]; Hosting computer site [web site] for Transport as a Service [Taas]; Provision of online non-downloadable software (application service provider); Provision of online non-downloadable web-based software; Online provision of web-based applications (non-downloadable); Online provision of web-based software (non-downloadable); Computer programming services for data processing; Computerised data storage services; Data storage, other than physical storage; Design of computer databases; Development of systems for the processing of data; Development of systems for the storage of data; Electronic data storage; Technical data analysis services; Design of commercial products; … Design of new products; Design of products; Product design; … Research in the field of artificial intelligence technology; Research to develop new products; … Development of new products; Product development;… (‘181 Services’)
[3] See Annexure A for full specification. The specification above only provides information on the Applicant’s Services identified and pursued by the Opponent in classes 35, 39 and 42.

The Opponent’s grounds of opposition only concern certain services in classes 35, 39 and 42, as identified in paragraph 1. I have reproduced the full specification for the 746 and 181 Marks at Annexure 1.
The Applications were examined as required by s 31 and advertised for possible registration on 12 July 2022 for the 746 Mark and on 15 July 2022 for the 181 Mark.
On 9 September 2022 the Opponent filed Notices of Intention to Oppose the Applications followed by its Statements of Grounds and Particulars (‘SGPs’) on 10 September 2022. The Applicant filed its Notices of Intention to Defend the oppositions on 1 November 2022.
Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support (‘EIS’):

746 Mark

Statutory Declaration of Adrian Ciabotti, Chief Financial Officer of Clemenger Group Limited, made on 17 February 2023 with Exhibits A to G.

181 Mark

Statutory Declaration of Adrian Ciabotti, made on 17 February 2023 with Exhibits A to G.

There does not appear to be any material difference between declarations of Mr Ciabotti filed as EIS in respect of the 746 and 181 Marks. As such I will refer to these two declarations collectively as Ciabotti 1 (‘Ciabotti 1’).

The Applicant filed the following evidence in answer:

746 Mark

Declaration of Renee Holbrook, Senior Director at CHEP Australia Limited, made on 2 June 2023, with Exhibits RH-1 to RH-8 (‘Holbrook 1’).

181 Mark

Declaration of Renee Holbrook, made on 2 June 2023, with Exhibits RH-1 to RH-15. (‘Holbrook 2’)

The Opponent filed the following evidence in reply:

746 Mark

Statutory Declaration of Adrian Ciabotti, made on 7 August 2023, with Exhibits A to E (‘746 Ciabotti 2’).

181 Mark

Statutory Declaration of Adrian Ciabotti, made on 7 August 2023, with Exhibits A to F (‘181 Ciabotti 2’).

Opponent’s late evidence

On 1 August 2024, the Opponent filed the Statutory Declaration of Daniel Stuart Pearce, General Counsel in Holding Redlich, made on 1 August 2024 with Exhibit A (‘Pearce’). In Pearce, Mr Pearce seeks leave to file, as additional evidence, a letter from Thomson Greer (‘TG letter’) to the Opponent dated 21 February 2022. Mr Pearce states that the TG letter was not included in the Opponent’s evidence in chief as an oversight. That the oversight occurred is likely because of an assumption that, because the Applicant was responsible for the letter and the correspondence was between the parties, it was not essential that it be included as part of the Opponent’s evidence.
Mr Pearce requests that the delegate exercise power under reg 21.15(4) to have regard to the late-filed evidence, on the basis that the public interest in determining the opposition fairly favours consideration of the TG letter and the Applicant will not be disadvantaged by its admission.
It the hearing the Applicant objected to the admission of this late evidence. The Applicant submits that the TG letter has been in the possession of the Opponent since 21 February 2022 and the only explanation provided for the failure to include this evidence with the Opponent’s evidence in chief is that Mr Peace failed to ‘turn my mind to the precise question as to whether the [TG letter] was included in the parties’ evidence until during the preparation of submissions for the hearing.
The Applicant submits that the Opponent’s explanation is insufficient to meet the requirements of reg 5.15(a). In addition, the Applicant submits that it does not meet the requirements of reg 5.15(2)(a) because no explanation has been made as to why the Opponent was unable to endure it evidence was filed on time and that it does not meet the requirements of reg 5.15(2)(b) because no 'exceptional circumstances’ are relied on. The Applicant claims that if Pearce is allowed it would cause significant prejudice to the Applicant.
Under reg 21.15(4), the Registrar is not bound by rules of evidence, although it may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Regulation 21.19 provides the Registrar with a discretion to take into account information that is relevant to proceedings.
Part 51.2.5 of the Trade Marks Manual of Practice and Procedure notes the Applicant must make a compelling case for the Registrar to take information into account that is not part of properly filed evidence. In this instance I note that the TG letter is dated after the 746 and 181 Relevant Dates, and where the evidence relates to events taking place in the intervening period it is unlikely to shed much light on the grounds of opposition, since the relevant date is generally the crucial point at which to assess the grounds of opposition. Other than addressing issues identified in the preparation of the Applicant’s submission, the Applicant made no compelling case for why the late filed evidence should be given weight. In any event, for reasons which follow, Pearce and the annexed TG letter do not change the outcome of this decision and it has not been necessary to refer to the late evidence or give it any weight. I therefore do not exercise my discretion under regs 21.15(4) or 21.19 to have regard to the late evidence filed by the Applicant.

Applicant’s late evidence

On 7 August 2024 the Applicant filed the declaration of Bentley Coogan, Partner at Thomson Greer for the Applicant, made on 7 August 2024, with Exhibits BSC-1 to BSC-2 (‘Coogan’).
The Applicant submits that it filed the late evidence because it was concerned that the Opponent, by its written submissions, is seeking to depart from its case as set out in the SGPs. In particular, the Applicant is concerned that the Opponent seeks to add an additional basis for its s 58 opposition. As pleaded, that ground relies only on the Opponent’s own alleged prior use of the 746 and 181 Marks. By its written submissions, the Opponent appears to raise an alternative argument that one or more entities within the ‘broader brambles group’ may have been the first user of the relevant marks.
The Opponent submits that if and only if the Opponent seeks to rely on the unpleaded alternative argument, the Applicant will seek leave pursuant regs 5.15 and/or 21.14(5) to rely upon Coogan.
At the hearing the Opponent had no objection to the late evidence filed by the Applicant.
The Applicant’s late filed evidence consists of two letters between the parties dated after the 746 and 181 Relevant Dates and licence documents. The Applicant only wishes to have these Exhibits allowed if the Opponent seeks to raise an alternative argument that one or more entities within the ‘broader brambles group’ may have been the first user of the 746 and 181 Marks. In the SGPs the Opponent particularised its claims under s 58 by stating that ‘[t]he Applicant does not use the Applicant’s Mark in connection with all its goods and services’. Clearly the Applicant has a case to answer in relation to the use or authorised use of the 746 and 181 Marks. However, for the reasons set out under the s 58 ground, I do not need to consider the issue of prior use, the Applicant’s late filed evidence is not determinative and hence I do not exercise my discretion under regs 21.15(4) and 21.19 to have regard to the late evidence filed by the Applicant.
Once time for filing evidence had ended both parties were given an opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of videoconference. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 12 August 2024. Natalie Hickey of Counsel instructed by Dan Pearce of Holding Redlich appeared on behalf of the Opponent. Ben Gardiner of Kings Counsel assisted by Genevieve Yates of Counsel and instructed by Ben Coogan and Georgia Campbell of Thompson Geer Lawyers appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition, Relevant Date and Onus

In the SGPs the Opponent nominated grounds of opposition under ss 42(b), 43, 58, 60 and 62A. The Opponent did not press the grounds of opposition under ss 42(b) and 43. Further the Opponent only identified and pursued the oppositions in relation to the 746 and 181 services in which registration is sought in classes 35, 39 and 43, not in respect of the whole of the goods and services for the 746 and 161 Marks are sought to be registered.
The date at which the rights of the parties are to be determined is the filing date of 11 February 2022 for the 746 Mark (‘746 Relevant Date’) and 14 February 2022 for the 181 Mark (‘181 Relevant Date’) which are also the priority dates for the purposes of s 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[4] The standard of proof is the ordinary civil standard of the balance of probabilities.[5]
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Discussion

The Opponent

The Opponent is an Australian advertising and communications agency established in 2012 following a merger of former agencies CHE (Clemenger Harvie Edge) and (Clemenger) Proximity.

The Applicant

The Applicant is an IP holding company for CHEP Australia Pty Ltd (‘CHEP AUS’) and is also a subsidiary of Brambles Limited. CHEP AUS is an Australian company involved in managed, returnable and reuseable packaging solutions, operating in 60 countries.

Section 58

Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In the SGPs the Opponent particularized this ground of opposition as follows:
The Applicant is not the owner of the Opposed Mark.
1. The Applicant’s Mark’s priority date is [11 February 2022 (746 Mark) and 14 February 2022 (181 Mark)].
2. In 2012, the Opponent commenced use of the Opponent’s Marks[6] in Australia.
3. Since that date the Opponent has used the Opponent’s Marks in Australia in connection with its goods and services including (among others) data handling and data processing for businesses.
4. The Opponent was the first to adopt and use the Opponent’s Marks in Australia in relation to (among others) advertising, communication, media services, and business and data management services.
5. The Applicant’s Mark is substantially identical or deceptively similar to the Opponent’s Marks.
6. The goods and services covered by the Applicant’s Mark are of the same kind as the goods and services offered under the Opponent’s Marks.
7. The Applicant’s Mark’s broad claim overlaps with the goods and services used by the Opponent.
8. The Applicant does not use the Applicant’s Mark in connection with all its goods and services.
9. Further particulars are matters for the evidence.
[6] The Opponent’s Marks are its CHEP NETWORK and CHEP trade marks.
To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is identical or substantially identical to the 746 and 181 Marks,^[7] in relation to services that are the ‘same kind of thing’ as the Applicant’s 746 and 181 Services.[8] The trade marks relied on by the Opponent must have been used in the course of trade prior to the filing date, or prior to the date of first use of the 746 and 181 Marks, whichever is earlier.[9]
[7] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
In regard to the first point, the test for whether two trade marks are substantially identical requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.[10] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.
[10] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).
The Opponent’s relies on its unregistered CHEP NETWORK and CHEP trade marks. On a side-by-side comparison given the Applicant’s 746 Mark and the Opponent’s CHEP NETWORK trade mark are both for the words CHEP NETWORK they are clearly substantially identical. Further, the Applicant’s 181 Mark and the Opponent’s CHEP trade mark are for the word CHEP solus and are also clearly substantially identical.
However, on the side by side comparison I do not find that the Applicant’s 181 Mark and the Opponent’s CHEP NETWORK trade mark are substantially identical. While both trade marks share the word CHEP, the word NETWORK in the Opponent’s trade mark is unlikely to go unnoticed on a side by side comparison. The total impression emerging from a side by side comparison is not one of resemblance. I also find that the Applicant’s 746 Mark and the Opponent’s CHEP trade mark are not substantially identical for the reasons set out above.
I now need to determine whether or not the Opponent’s services provided under its CHEP NETWORK and CHEP trade marks are the ‘same kind of thing’ as the 746 and 181 Services. To be the same kind of thing, the services must be ‘essentially the same’.[11]
[11] Re Hicks Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 (Holroyd J).

In Ciabotti 1, Mr Ciabotti states that the Opponent was founded in 1987 and has been trading as an ‘advertising and communications agency’ under the CHE Proximity Pty Ltd name since August 2012, providing adverting, marketing, communication, media services, data processing services for business, software and technology services, data management, data handling and data analysis services, and business services (‘core services’). On 9 February 2022 the Opponent announced its formal rebranding as CHEP NETWORK and CHEP and sort to promote the agency as having eleven distinct service offerings being Media, Experience, Content, Public Relations, Research, Creative, Social, Data & Business Intelligence, Consulting, Design and Technology (‘services offerings’).[12]
[12] Ciabotti 1, Exhibit C.
As noted above Mr Ciabotti describes the Opponent as an ‘advertising and communications agency’. The description of the Opponent’s business as an advertising agency is supported by Exhibit G to Ciabotti which comprises a screenshot from the Opponent’s twitter account dated 4 February 2022. The post regards the Opponent’s rebrand and teases ‘a new agency model in Australian advertising’. The description of the Opponent being an advertising agency is also supported by industry publications such as Mumbrella, Ad News and B&T.[13]
[13] Ciabotti 1, Exhibit B and C.
In the context of the Opponent being an advertising agency, in Ciabotti 1, Mr Ciabotti refers the Opponent’s core services and services offerings in vague terms such as 'media', 'data', 'technology', 'design', 'social' ' research', 'software', 'business intelligence' and 'PR' services.
These broad terms present several challenges in establishing the scope of the Opponent’s services to the extent that it is unclear what services the Opponent is actually providing. For example, when the Opponent states that it provides ‘software’ or ‘software and technology services’, there is no explanation of what software it provides, or for what purpose. There is no indication in any of the Opponent’s evidence that the agency provides any one of its core services or services offerings as a stand-alone service. For example, the Opponent may provide ‘data’ services to support a client’s overall advertising strategy, but these services are merely ancillary to the actual services provided by the Opponent which here are advertising services.
These ambiguities also present a challenge when it comes to being satisfied that the services are of the same kind as the Applicant's 746 and 181 Services. Using the ‘data’ example again, I would be hesitant to say that these are services of the same kind as any of the Applicant's 746 and 181 data services in Class 35. It is difficult to be satisfied on this point given the challenges involved in defining what services the Opponent is actually providing.
It is incumbent on a party to provide clear evidence of what services it actually offers under a trade mark rather than vague stated claims. Given the deficiencies in the Opponent’s evidence, I am not satisfied that at the Relevant Dates the Opponent was the owner of the CHEP NETWORK and CHEP trade marks for anything other than advertising services.
Services of the same kind requires that the services, be in essence, the same. I find that the Opponent’s advertising services are not in essence the same as any of the Applicant’s 746 and 181 Services.
The Opponent has not established the ground of opposition under s 58.

Section 60

Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
In the SGPs the Opponent relies on the reputation of its CHEP NETWORK and CHEP trade marks.
To satisfy s 60, the Opponent must establish that each of the trade marks upon which it relies had a reputation in Australia at the priority date of the 746 and 181 Marks. The Opponent must then establish that because of that reputation, use of the 746 and 181 Marks would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[14] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[15]
[14] [2000] FCA 1335, [81].
[15] [1992] FCA 159, [118].
Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[16]
[16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[17]
[17] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
The Opponent submits that prior to the priority dates of the 746 and 181 Marks the Opponent had developed a significant or substantial reputation in the advertising and communications industry in Australia in offering and suppling its core services under or by reference to CHEP.
In Ciabotti 1, Mr Ciabotti states that since August 2012 the Opponent had been trading as CHE Proximity Pty Ltd. Mr Ciabotti states that since that time the Opponent has been known and referred to by the colloquial abbreviation of its name CHEP, both within the Opponent’s business and eternal to the Opponent’s business. Exhibit B to Ciabotti 1 comprises articles published by industry insiders including Ad News, B&T Magazine and Mumbrella since 2019. The articles refer to the Opponent colloquially or in short hand as CHEP.
Mr Ciabotti states that in early January 2022, the Opponent announced its formal rebranding from CHE Proximity to CHEP NETWORK. Exhibit’s C and G to Ciabotti 1 comprises evidence that on 4 February 2022 the Opponent ‘teased’ a rebrand of its name to CHEP.[18] Then on 9 February 2022 the Opponent announced its decision to officially rebrand as CHEP NETWORK, using both the CHEP NETWORK and CHEP trade marks.
[18] Ciabotti 1, Exhibit C and G.
Mr Ciabotti states that in 2022 the Opponent’s expenditure on promoting and advertising the Opponent’s CHEP NETWORK and CHEP trade marks and associated ‘CHEP brand was $1.34 million… which included marketing the rebrand, updating the website, creating content for the rebrand and related promotional endeavors’.
Exhibit E to Ciabotti comprises undated copies of the homepage and a content page from Opponent’s website (‘Website’), which features its CHEP NETWORK and CHEP trade marks and lists its services offerings. Exhibit F to Ciabotti comprises internet analytics for the Website for the period February 2022 to February 2023. Exhibit G to Ciabotti 1 comprises undated posts from the Opponent’s social media channels Linkein and Instagram and dated posts from the Opponent’s Twitter account from September 2021 to 4 February 2022.
Mr Ciabotti also provides a table detailing client numbers and approximate annual revenue generated by the Opponent for the years 2019 to 2022.
On my assessment of the Opponent’s evidence, I cannot be satisfied that the Opponent had a reputation in its CHEP NETWORK and CHEP trade marks in relation to its core services at the priority dates of the 181 and 746 Marks. The Opponent officially launched its CHEP NETWORK and CHEP trade marks on 9 February 2022 which means that these trade marks had only been used two days before the priority date of the 746 Mark and five days before the priority date 181 Mark. While the evidence shows that since 2019 industry insiders have referred to the Opponent by the short hand name CHEP, there is no evidence that consumers generally were exposed to this name or that the Opponent promoted the name CHEP to consumers before its decision to rebrand from CHE Proximity.
The Opponent’s annual revenue for the years 2019 to 2022 is high, and its advertising expenditure for the year 2022 is substantial. However, the revenue figures are only applicable for the days between the Opponent’s official launch on 9 February 2022 and the priority dates of the 746 and 181 Marks. Moreover, while the Opponent declared its advertising expenditure was spent in the year 2022, there is no indication when, during 2022, this money was spent and there is limited dated evidence of any of its promotional activities undertaken by the Opponent in relation to its CHEP NETWORK and CHEP trade marks.
Overall, I am not satisfied that the Opponent’s claim to a reputation in Australia in its CHEP NETWORK and CHEP trade marks for its core services is supported by the evidence. The Opponent has not established as a matter of fact, that is core services sold under its CHEP NETWORK and CHEP trade marks were recognised in Australia at the priority date of the 746 and 181 Marks by a significant or substantial number of potential consumers.
As s 60 (a) has not been established, it is not necessary for me to consider s 60(b).

Section 62A

Section 62A provides:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Opponent has particularised the ground of opposition in the SGPs by reference to the Opponent’s CHEP and CHEP NETWORK trade marks. In summary the Opponent claims it has acquired a substantial reputation within its industry in Australia before the priority date and that the Applicant knew or ought to have known that they had no entitlement to the Trade Mark in respect of the overlapping services used by the Opponent.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some illustrations of applications made in bad faith:
·     persons who monitor new property developments, register the name of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·     persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks; and
·     persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
These illustrations are not exhaustive. In DC Comics v Cheqout Pty Ltd, Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[19] Moreover, conduct after the priority date can be used to shed light on the Applicant’s subjective intent at the filing date.[20]
[19] [2013] FCA 478, [62].
[20] Ibid, [71].
The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant actually knew at the filing date, and then consider whether, armed with that knowledge, its decision to apply to register the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’)[21] Dodds-Streeton J made the following comments, quoting from Harrisons’s Trade Mark Application:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[22]
[21] [2012] FCA 81.
[22] Harrison’s Trade Mark Application [2004] EWCA Civ 1028.
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[23]
[23] Fry (n 31) [147], [165]-[166].
In Ciabotti 1 Mr Ciabotti asserts that at the time the Applicant filed for registration of the 746 and 181 Marks, the Applicant knew or ought to have known of the use of the Opponent's CHEP NEWTORK and CHEP trade marks in Australia. In particular, within days of the Opponent’s rebrand being reported, the Applicant applied for the registrations in 12 classes, including many classes for which it had never previously sought registration. The Opponent’s CHEP NETWORK and CHEP trade marks had acquired a reputation within their industry in Australia before the priority dates of the 746 and 1818 Marks, and the Applicant is using or intends to use the Opponent’s reputation to sell its services.
In response the Applicant argues that the business carried on by the Applicant has a well-established, long-standing reputation within the market, and it has used each of the 746 and 181 Marks for many years. The Applicant submits there could be no possible suggestion to the effect that by seeking registration of the 746 and 181 Marks that it was somehow hoping to take on the Opponent’s reputation within the world of advertising.
The onus is on the Opponent to establish that the act of filing the Applications was in bad faith. While the standard of proof remains the same, given the serious nature of the allegation, cogent evidence is required in order to prove it.[24]
[24] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Delegate Nancarrow).
Turning to the factors raised by the Opponent, I am not satisfied that that the Applicant’s conduct here necessarily falls short of standard of acceptable commercial standards. Even if the Applicant was aware of the Opponent’s CHEP NETWORK and CHEP trade marks, ‘mere knowledge before the filing date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’.[25]
[25] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Delegate Thompson).
I have already found that the Opponent has not established a reputation in Australia in relation to its CHEP NETWORK and CHEP trade marks at the priority dates of the 746 and 181 Marks. As such I cannot conclude that the decision by the Applicant to apply and seek to register the 746 and 181 Marks for its chosen services was a decision to take advantage of the reputation in the Opponent’s CHEP NETWORK and CHEP trade marks.
As there are no other aspects of the Opponent’s evidence that point to any activity or action taken by the Applicant that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character, I am not satisfied on the balance of probabilities that the filing of the Applicants in the circumstances existing at the filing date was conduct that constitutes bad faith.
The ground of opposition under s 62A has not been established.

Decision

Section 55 provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established a ground of opposition in relation to the Applicant’s 746 and 181 Services. Trade mark applications 2248746 and 2249181 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Applications should be in accordance with the Court’s order or direction.

Costs

Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations in respect of trade mark number 2248746. For trade mark number 2249181, I award reduced costs against the Opponent in the same manner as Hume Industries (Malayasia) Berhad v James Hardie & Coy Pty Ltd.[26]
[26] [2001] ATMO 78 (Delegate Williams).

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

1 November 2024

Annexure A

Trade Mark

Specification

2248746

CHEP NETWORK

11.02.2022

Class 6: Metal containers for the transport of goods, wire slings, chain slings, cargo handling nets made of wire or chain and turntables; Control valves (manual) for controlling the flow of liquids (other than parts of machines); Containers of metal or substantially of metal (storage, transport); Metal containers for the storage of goods; Frames of metal for containers; Slide closers of metal for containers; Thermally insulated containers of metal or substantially of metal (other than for household use); Stillages of metal; Parts, components and accessories for all of the aforementioned goods

Class 9: Computer software; Computer software (programs); Data processing software; Computer software and hardware platforms for cooperative intelligent transport systems; Computer software and hardware platforms for intelligent transport systems; Computer software designed to estimate resource requirements; Computer software for business purposes; Downloadable software applications (apps); Global positioning system (GPS) apparatus; Data processing programmes; Data processing programs; Data processing systems; Data programmes; Data sets, recorded or downloadable; Business programmes for computers; Computer software for analysing market information; Computer programs for data processing; Data recorded electronically; Data recorded electronically from the Internet

Class 16: Paper and paper articles, cardboard and cardboard articles, printed matter, pallets made of cardboard and containers for the transport of goods made of cardboard included in this class; Advertising display boards of cardboard (non-luminous); Advertising display stands of cardboard, not being furniture; Articles of cardboard for display purposes Cardboard articles for display purposes, not being furniture; Display boxes of cardboard, not being furniture

Class 20: Containers of all description included in this class inclusive of containers made of wood or fibreglass; Heat insulated containers of all description in this class; All types of containers for the handling or transporting of goods included in this class; Pallets made of wood or fibreglass; Non-metallic stackable trays for the packaging of materials; Stacking trays of plastic; Trays, not of metal; Crates; Packaging boxes in collapsible form (plastic)

Class 22: Disposable plastics material liners for use in bulk containers; Liners for use in bulk containers; Plastic liners (sacks) for bulk containers; Plastic liners for the storage of bulk material in containers; Plastic liners for the transport of bulk material in containers

Class 35: Business management, organisation, administrative and consultancy services rendered to assist in the managing of unit load equipment pools, including pallets and containers, fruit boxes and crates, by and including computer and manual control systems; Business management, organisation, administrative and consultancy services rendered to assist in equipment pooling systems and their management; Expert assessments in business and operational matters; Collection of data; Collection of personnel information; Data collection (for others); Data analysis; Data handling; Data management; Data processing for businesses; Business consultancy in relation to operations and logistics; Business consulting services in relation to logistics; Logistics services (business management and organization of facilities and resources); Compilation of information into computer databases; Maintaining data in databases; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Updating data in databases; Business consultancy to firms; Business consultancy to individuals; Consultancy relating to business efficiency; Business networking services

Class 37: Repair services for material handling equipment namely, maintenance and repair of vehicles, unit load equipment, pallets and containers, lubrication of vehicles and equipment; Platform rental

Class 39: Pallets, container, crates and equipment hire pooling services; Haulage; Transport and packaging of goods for transit; Packing of merchandise for transit; Contract packing for transit; Hiring, leasing and rental of pallets; Hiring, leasing and rental of containers; Rental of crates; Rental of storage crates; Rental of storage containers; Warehousing and storage; Transporting services; Hiring, leasing and rental of material handling equipment; Hiring, leasing and rental of physical distribution equipment; Locating and tracking of people and cargo for transportation purposes; Location and tracing of goods by computer; Logistics services (transport, packaging, and storage of goods); Advisory services relating to the handling of goods; Advisory services relating to the packing of goods; Advisory services relating to the storage of goods; Advisory services relating to the transport industry; Advisory services relating to transport; Advisory services relating to transportation; Arrangement for the transportation of goods; Computerised distribution advisory services relating to transport; Transportation logistics; Container transport services; Transportation of containers; Consultancy services relating to transportation; Consultancy services relating to warehousing; Consultation services relating to the packaging of goods; Transport consultancy services

Class 41: Publication of manuals; Transfer of business knowledge and know-how [training]; Arranging and conducting of workshops (training); Business training consultancy services; Business training services; Computer based training; Conducting training seminars; Conducting workshops (training); Know-how transfer [training]; Organisation of training courses; Providing courses of training; Provision of training courses; Business educational services

Class 42: Designing of computer software; computer programming; design services for packaging; research and development of systems for pallet and other pooling services; Hosting digital platforms for Logistics as a Service [Laas]; Hosting digital platforms for Mobility as a Service [Maas]; Hosting digital platforms for Transport as a Service [Taas]; Hosting computer sites [web site] for Mobility as a Service [Maas]; Hosting computer site [web site] for Transport as a Service [Taas]; Provision of online non-downloadable software (application service provider); Provision of online non-downloadable web-based software; Online provision of web-based applications (non-downloadable); Online provision of web-based software (non-downloadable); Computer programming services for data processing; Computerised data storage services; Data storage, other than physical storage; Design of computer databases; Development of systems for the processing of data; Development of systems for the storage of data; Electronic data storage; Technical data analysis services; Design of commercial products; Design of industrial products; Design of new products; Design of products; Product design; Industrial research of new products; Research and development of products; Research in the field of artificial intelligence technology; Research to develop new products; Scientific or technological research relating to safety; Development of new products; Product development; Product monitoring services for quality assurance

Class 44: Tree planting; Tree planting for carbon offsetting

Class 45: Monitoring of geofence surveillance systems; licensing of intellectual property being for the purpose of exploitation of patents and know how (by license agreement know how)

2249181

CHEP

14.02.2022

Class 6: Control valves (manual) for controlling the flow of liquids (other than parts of machines)

Class 16: Advertising display boards of cardboard (non-luminous); Advertising display stands of cardboard, not being furniture; Articles of cardboard for display purposes Cardboard articles for display purposes, not being furniture; Display boxes of cardboard, not being furniture

Class 20: Non-metallic stackable trays for the packaging of materials; Stacking trays of plastic; Trays, not of metal; Crates; Packaging boxes in collapsible form (plastic)

Class 35: Collection of data; Collection of personnel information; Data collection (for others); Data analysis; Data handling; Data management; Data processing for businesses; Business consultancy in relation to operations and logistics; Business consulting services in relation to logistics; Logistics services (business management and organization of facilities and resources); Compilation of information into computer databases; Maintaining data in databases; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Updating data in databases; Business consultancy to firms; Business consultancy to individuals; Consultancy relating to business efficiency; Business networking services

Class 37: Platform rental

Class 39: Rental of crates; Rental of storage crates; Rental of storage containers; Locating and tracking of people and cargo for transportation purposes; Location and tracing of goods by computer; Logistics services (transport, packaging, and storage of goods); Advisory services relating to the handling of goods; Advisory services relating to the packing of goods; Advisory services relating to the storage of goods; Advisory services relating to the transport industry; Advisory services relating to transport; Advisory services relating to transportation; Arrangement for the transportation of goods; Computerised distribution advisory services relating to transport; Transportation logistics; Container transport services; Transportation of containers; Consultancy services relating to transportation; Consultancy services relating to warehousing; Consultation services relating to the packaging of goods; Transport consultancy services

Class 42: Hosting digital platforms for Logistics as a Service [Laas]; Hosting digital platforms for Mobility as a Service [Maas]; Hosting digital platforms for Transport as a Service [Taas]; Hosting computer sites [web site] for Mobility as a Service [Maas]; Hosting computer site [web site] for Transport as a Service [Taas]; Provision of online non-downloadable software (application service provider); Provision of online non-downloadable web-based software; Online provision of web-based applications (non-downloadable); Online provision of web-based software (non-downloadable); Computer programming services for data processing; Computerised data storage services; Data storage, other than physical storage; Design of computer databases; Development of systems for the processing of data; Development of systems for the storage of data; Electronic data storage; Technical data analysis services; Design of commercial products; Design of industrial products; Design of new products; Design of products; Product design; Industrial research of new products; Research and development of products; Research in the field of artificial intelligence technology; Research to develop new products; Scientific or technological research relating to safety; Development of new products; Product development; Product monitoring services for quality assurance

Class 44: Tree planting; Tree planting for carbon offsetting

Class 45: Monitoring of geofence surveillance systems

[8] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

[2024] ATMO 213

1 November 2024

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Costs

Appeal

Statutory Construction